1451 Divisional Reissue Applications; Continuation Reissue Applications Where the Parent is Pending [R-01.2024]

The court in In re Graff, 111 F.3d 874, 876-77, 42 USPQ2d 1471, 1473 (Fed. Cir. 1997) stated that “[t]he statute does not prohibit divisional or continuation reissue applications, and does not place stricter limitations on such applications when they are presented by reissue, provided of course that the statutory requirements specific to reissue applications are met.” Following the decision in Graff, the Office has adopted a policy of treating continuations and divisionals of reissue applications, to the extent possible, in the same manner as continuations and divisionals of non-reissue applications.

Nonetheless, the mere fact that the application purports to be a continuation or divisional of a parent reissue application does not make it a reissue application itself, since it is possible to file a 35 U.S.C. 111(a) continuing application of a reissue application. See In re Bauman, 683 F.2d 405, 409, 214 USPQ 585, 589 (CCPA 1982) (a patentee may file a regular continuation of a reissue application that obtains the benefit of the reissue application's filing date).

The filing of a regular continuation or divisional application (e.g., a Bauman type continuation or divisional application) has at least two significant effects. First, the claims in a Bauman type continuation or divisional application will not have the same effective U.S. filing date as the original patent. This is because a reissue application is necessarily filed after the patenting of the original application. Therefore, a Bauman type continuation or divisional application of the reissue application could not satisfy the copendency requirement of 35 U.S.C. 120 with respect to the original patent. See Bauman, 683 F.2d at 410, 214 USPQ at 590 (regular continuation of a reissue cannot claim benefit to the filing date of the original patent, but instead is limited to the filing date of the reissue); Conover v. Downs, 35 F.2d 59, 17 C.C.P.A. 587, 590-91 (C.C.P.A. 1929) (reissue continuation of a reissue cannot claim benefit to the filing date of the original patent, but instead is limited to the filing date of the reissue). At best, the earliest effective U.S. filing date would be the filing date of the first reissue application that the Bauman type continuation or divisional application is entitled to claim benefit to under 35 U.S.C. 120. Second, a decision to file a Bauman type continuation or divisional application instead of a continuation or divisional reissue application results in the inability to file any subsequent reissues of the original patent once there are no pending applications for reissue of the original patent. See MPEP § 1460 for more information about surrender when there are multiple reissue applications and the effect of a reissue patent on other related reissue applications.

If filing a continuation reissue application as opposed to a Bauman type continuation application, there must be an identification, on filing, that the application is a continuation reissue application. Likewise, there must be an identification, on filing, that the application is a divisional reissue application, as opposed to a divisional of a reissue application.

If the application data sheet states, or the specification is amended to state, that the application is a "continuation" or "divisional" of its parent reissue application, the application may very well be treated as a Bauman type continuation or divisional application. The application data sheet should separately identify the application as (1) a continuation or divisional of the parent reissue application, and (2) a reissue of the original patent. For examples, see Reissue Filing Guide for Applications Filed on/after September 16, 2012 (posted at www.uspto.gov/sites/default/files/ forms/uspto_reissue_ads_guide_Sept2014.pdf).

In general, an application which is a continuing application of a reissue application will be considered a Bauman application when there are no indicia on filing that a continuing reissue application is being filed. Indicia that a continuing reissue application is being filed are:

• 1. A 37 CFR 1.175 reissue oath/declaration, which is not merely a copy of the parent’s reissue oath/declaration.
• 2. A specification and/or claims in proper double column reissue format per 37 CFR 1.173.
• 3. Amendments in proper format per 37 CFR 1.173.
• 4. A 37 CFR 3.73 statement of assignee ownership and consent by assignee.
• 5. A correct transmittal letter identifying the application as a reissue filing under 35 U.S.C. 251. It is recommended that Form PTO/AIA/50 be used.
• 6. An identification of the application as being "a reissue continuation of application number [the parent reissue application]" or "a continuation of application number [the parent reissue application] and an application for reissue of patent number [the patent for which reissue is sought]" or equivalent language, rather than being "a continuation of reissue application number [the parent reissue application]."

The following are hypothetical examples of acceptable identification in the first sentence(s) of the specification that provide the appropriate continuity language for a continuation or divisional reissue application (as opposed to a Bauman type non-reissue continuing application).

It is recommended that the first line of the specification still contain language set forth in the above examples to help ensure that the Office recognizes the application as a continuation reissue application or divisional reissue application (as opposed to a Bauman type non-reissue continuing application) even though the application data sheet contains the benefit claim(s).

Questions relating to the propriety of divisional reissue applications and continuation reissue applications should be referred via the Technology Center (TC) Training Quality Assurance Specialist (TQAS) or Supervisory Patent Reexamination Specialist (SPRS).

I. DIVISIONAL REISSUE APPLICATIONS

Whenever a divisional reissue application is filed with a copy of the assignee consent and a copy of the oath/declaration from the parent reissue application, the copy of the assignee consent and the reissue oath/declaration should both be accepted by the Office of Patent Application Processing (OPAP) and the divisional reissue application accorded a filing date so long as all other filing requirements are met. See subsections I.A and I.B below for more information on the examiner’s review of the assignee consent and the oath/declaration.

37 CFR 1.176(b) permits the examiner to require restriction in a reissue application between the original claims of the patent and any newly added claims which are directed to a separate and distinct invention(s). See also MPEP § 1450. As a result of such a restriction requirement, divisional reissue applications may be filed for each of the inventions identified in the restriction requirement.

In addition, applicant may initiate a division of the claims by filing more than one reissue application in accordance with 37 CFR 1.177. The multiple reissue applications which are filed may contain different groups of claims from among the original patent claims, or some of the reissue applications may contain newly added groups (not present in the original patent). There is no requirement that the claims of the multiple reissue applications be independent and distinct from one another; if they are not independent and distinct from one another, the examiner must apply the appropriate double patenting rejections.

There is no requirement that a family of divisional reissue applications issue at the same time; however, it is required that they contain a cross reference to each other in the specification. 37 CFR 1.177(a) requires that all multiple reissue applications resulting from a single patent must include as the first sentence of their respective specifications a cross reference to the other reissue application(s). Accordingly, the first sentence of each reissue specification must provide notice stating that more than one reissue application has been filed, and it must identify each of the reissue applications and their relationship within the family of reissue applications, and to the original patent. An example of the suggested language to be inserted is as follows:

Notice: More than one reissue application has been filed for the reissue of Patent No. 99,999,999. The reissue applications are application number 99/999,994 (the present application); and application numbers 99/999,995 and 99/999,998, both of which are divisional reissues of Patent No. 99,999,999.

The examiner should object to the specification and require an appropriate amendment if applicant fails to include such a cross reference to the other reissue applications in the first sentence of the specification of each of the reissue applications.

Where one of the divisional reissue applications of the family has issued without the required cross reference to the other reissue application(s), the examiner will refer the matter to their Supervisory Patent Examiner (SPE) or Supervisory Patent Reexamination Specialist (SPRS). The SPE or SPRS will initiate a certificate of correction under 37 CFR 1.322 to include the appropriate cross reference in the already issued first reissue patent before passing the pending reissue application to issue. Form paragraph 10.19 may be used for such purpose. After the SPE or SPRS prepares the memorandum as per form paragraph 10.19, the memorandum should be forwarded to the Certificates of Correction Branch for issuance of a certificate. The examiner should make a reference in the pending divisional reissue application to the fact that an actual request for a certificate of correction has been initiated in the first reissue patent pursuant to 37 CFR 1.177(a), e.g., by an entry in the search notes or in an examiner’s amendment.

In addition to the amendment to the first sentence of the specification, the reissue application cross references will also be reflected in the file. For an IFW reissue application file, a copy of the bibliographic data sheet from the IFW file history should be annotated by the examiner such that adequate notice is provided that more than one reissue application has been filed for a single original patent. The annotated sheet should be scanned into IFW.

Pursuant to 37 CFR 1.177(b) all of the claims of the patent to be reissued must be presented in each reissue application in some form, i.e., as amended, as unamended or as canceled. Further, any added claims must be numbered beginning with the next highest number following the last patent claim. It is noted that the same claim of the patent cannot be presented for examination in more than one of the divisional reissue applications, as a pending claim, in either its original or amended versions. If a patent claim is presented in one of the divisional reissue applications of a reissue application "family," as a pending claim, then that patent claim must be presented as a canceled claim in all the other reissue applications of that family. Once a claim in the patent has been reissued, it does not exist in the original patent; thus, it cannot be reissued from the original patent in another reissue application. If the same claim of the patent, e.g., patent claim 1 is presented for examination in more than one of the reissue applications, in different amended versions, the following rejections should be made in the reissue applications with that patent claim:

A rejection under 35 U.S.C. 251, in that the reissue application is not correcting an error in the original patent, because original claim 1 would be superseded by the reissuance of claim 1 in the other reissue application.

A rejection under 35 U.S.C. 112, in that claim 1 is indefinite because the invention of claim 1 is not particularly pointed out and distinctly claimed. Claim 1 presents one coverage in divisional reissue application X and another in the present reissue application. This is inconsistent.

The reissue applicant should then be advised to follow a procedure similar to the following example:

If there are patent claims 1 – 10 in two divisional reissue applications and an applicant wishes to revise claim 1, which is directed to AB (for example) to ABC in one divisional reissue application, and to ABD in a second divisional reissue application, applicant should do the following: Claim 1 in the first divisional reissue application can be revised to recite ABC. Claim 1 in the second divisional reissue application would be canceled, and new claim 11 would be added to recite ABD. The physical cancellation of claim 1 in the second divisional reissue application will not prejudice applicant’s rights in the amended version of claim 1 because those rights are retained via the first reissue application. Claim 1 continues to exist in the first reissue application, and both the first and second reissue applications taken together make up the totality of the correction of the original patent.

If the same or similar claims are presented in more than one of the multiple reissue applications, the possibility of statutory double patenting (35 U.S.C. 101) or nonstatutory (judicially created doctrine) double patenting should be considered by the examiner during examination, and the appropriate rejections made. A terminal disclaimer may be filed to overcome a nonstatutory double patenting rejection. The terminal disclaimer is necessary in order to ensure common ownership in accordance with 37 CFR 1.321(c)(3) or common enforcement in accordance with 37 CFR 1.321(d)(3) of the reissue patents during enforcement actions in the remainder of the unexpired term of the original patent.

A. Consent of the Assignee

A copy of the assignee consent is only acceptable if the divisional reissue application is correcting an error for which consent was previously made. For example, in a divisional reissue application filed in response to a restriction requirement made in the parent reissue application, the assignee need not file a consent to the divided-out invention now being provided in the divisional reissue application if the assignee consent provided covers the error being corrected in the child divisional reissue application.

Whenever a divisional reissue application is filed with a copy of the assignee consent from the parent reissue application, but with a newly executed reissue oath/declaration, the copy of the assignee consent from the parent reissue application should not be accepted. Submission of a new oath or declaration is indicative of correction of a different error. The copy of the assignee consent from the parent reissue application does not indicate that the assignee has consented to the addition of the new invention of the divisional reissue application to the original patent. In such circumstances, the Office of Patent Application Processing (OPAP) will accord the divisional reissue application a filing date, and the examiner should reject the claims under 35 U.S.C. 251 and require the submission of a new assignee consent. See MPEP § 1410.02.

B. Reissue Oath/Declaration

Whenever a divisional reissue application is filed with a copy of the oath/declaration from the parent reissue application, the copy of the reissue oath/declaration in the divisional reissue application should be accepted by OPAP, because it is an oath/declaration, even though it may be improper under 35 U.S.C. 251 or 37 CFR 1.175.

1. Copy of Reissue Oath/Declaration from Parent Reissue Application(a) Continuing Reissue Applications Filed On or After September 16, 2012

In the remarks accompanying a continuing reissue application, the applicant should explain why the filing of the copy of the oath/declaration from the parent reissue application is sufficient.

If the copy of the oath or declaration from the parent reissue application does not comply with 37 CFR 1.175(f)(1), the examiner should reject the claims of the continuing (i.e., divisional or continuation) reissue application under 35 U.S.C. 251 as being based on a defective oath/declaration, and require a new oath/declaration. See MPEP § 1414, subsection II, item (D). In addition, the examiner should check to see if the error statement in the copy of the oath/declaration covers an error being corrected in the continuing reissue application.

(b) Continuing Reissue Applications Before September 16, 2012

Pursuant to pre-AIA 37 CFR 1.175(e), the requirement for the inventor’s oath or declaration for a continuing reissue application may be satisfied by a copy of the inventor’s oath or declaration from the earlier-filed reissue application only when the continuing reissue application replaces its parent reissue application.

If the copy of the oath or declaration from the parent reissue application does not comply with pre-AIA 37 CFR 1.175(e), the examiner should reject the claims of the continuing reissue application under 35 U.S.C. 251 as being based on a defective oath/declaration and require a new oath/declaration. See MPEP § 1414, subsection II, item (D). In addition, the examiner should check to see if the error statement in the copy of the oath/declaration covers an error being corrected in the continuing reissue application.

2. Error Statement

The examiner should check the copy of the oath/declaration to ensure that it identifies an error being corrected by the continuing (i.e., divisional or continuation) reissue application. For divisional reissue applications, the copy of the oath/declaration from the parent reissue application may or may not cover the error being corrected by the divisional reissue application because the divisional reissue application is (by definition) directed to a new invention. If the copy of the oath/declaration does not cover an error being corrected by the continuing reissue application, the examiner should reject the claims of the continuing reissue application under 35 U.S.C. 251 as being based on an oath/declaration that does not identify an error being corrected by the continuing reissue application, and require a new oath/declaration and a new assignee consent if it does not cover the error being corrected in the continuing reissue application. See MPEP §§ 1414 and 1410.02.

For applications filed on or after September 16, 2012, a new oath/declaration is required for identification of the error if the copy of the oath/declaration from the parent reissue application does not cover an error being corrected in the continuing reissue application. Identification of the error in the remarks accompanying the reissue application or a reply is not sufficient, because 37 CFR 1.175(f)(2) states that “[i]f all errors identified in the inventor’s oath or declaration from the earlier-filed reissue application are no longer being relied upon as the basis for reissue, the applicant must identify an error being relied upon as the basis for reissue,” and in this instance the initial oath/declaration (the copy filed) never stated a proper “error.” In other words, 37 CFR 1.175(f)(2) allows for the identification of the reissuable error in the remarks only when a proper reissuable error was previously entered into the application. If the copy of the reissue oath/declaration from the parent reissue application does in fact cover an error being corrected in the continuing reissue application, no such rejection should be made.

For applications filed before September 16, 2012, even when the copy of the reissue oath/declaration from the parent covers an error being corrected in the continuing reissue application, a supplemental reissue oath/declaration pursuant to pre-AIA 37 CFR 1.175 (b)(1) will be required. See MPEP § 1414.03. Pre-AIA 37 CFR 1.175(e) requires that the oath/declaration of a continuing reissue application must identify at least one error in the original patent which has not been corrected by the parent reissue application or an earlier reissue application. Thus, where a continuing reissue application, filed prior to September 16, 2012, corrects the same error in a different way than its parent reissue application does, different oaths/declarations must be presented in the two reissue applications. In addition, for applications filed before September 16, 2012, if a preliminary amendment was filed with the continuing reissue application, the examiner should check for the need of a supplemental reissue oath/declaration. Pursuant to pre-AIA 37 CFR 1.175(b)(1), for any error corrected via the preliminary amendment which is not covered by the oath or declaration submitted in the parent reissue application, applicant must submit a supplemental oath/declaration stating that every such error arose without any deceptive intention on the part of the applicant. See MPEP §§ 1414 and 1414.03.

Situations yielding divisional reissues occur infrequently and usually involve only two such files. It should be noted, however, that in rare instances in the past, there have been more than two (and as many as five) divisional reissues of a patent. For treatment of a plurality of divisional reissue applications resulting from a requirement to restrict to distinct inventions or a requirement to elect species, see MPEP § 1450.

II. CONTINUATION REISSUE APPLICATIONS

Whenever a continuation reissue application is filed with a copy of the assignee consent and a copy of the oath/declaration from the parent reissue application, the copy of the assignee consent and the reissue oath/declaration should both be accepted by OPAP and the application accorded a filing date so long as all other filing requirements are met. See subsections II.A and II.B below for more information on the examiner’s review of the assignee consent and the oath/declaration.

A continuation reissue application of a parent reissue application is not ordinarily filed “for distinct and separate parts of the thing patented” as called for in the second paragraph of 35 U.S.C. 251. The decision of In re Graff, 111 F.3d 874, 42 USPQ2d 1471 (Fed. Cir. 1997) interprets 35 U.S.C. 251 to permit multiple reissue patents to issue even where the multiple reissue patents are not for “distinct and separate parts of the thing patented.” The court stated:

Section 251[2] is plainly intended as enabling, not as limiting. Section 251[2] has the effect of assuring that a different burden is not placed on divisional or continuation reissue applications, compared with divisions and continuations of original applications, by codifying the Supreme Court decision [The Corn-Planter Patent, 90 U.S. 181, 227-28 (1874)] which recognized that more than one patent can result from a reissue proceeding. Thus § 251[2] places no greater burden on Mr. Graff’s continuation reissue application than upon a continuation of an original application; § 251[2] neither overrides, enlarges, nor limits the statement in § 251[3] that the provisions of Title 35 apply to reissues.

In re Graff, 111 F.3d at 877, 42 USPQ2d at 1473. Accordingly, prosecution of a continuation reissue application of a parent reissue application will be permitted (despite the existence of the pending parent reissue application) where the continuation reissue application complies with the rules for reissue.

The parent and the continuation reissue applications should be examined together if possible. In order that the parent-continuation relationship of the reissue applications be specifically identified and notice be provided of reissue applications for both the parent and the continuation reissue application, the following is done:

• (A) An appropriate amendment to the continuing data entries must be made to the first sentence of the specification (see the discussion above in subsection I under the heading “Divisional Reissue Applications”).
• (B) For an IFW reissue application file, a copy of the bibliographic data sheet from the IFW file history should be annotated by the examiner such that adequate notice is provided that more than one reissue application has been filed for a single original patent. The annotated sheet should be added to the application file in IFW.

As is true for the case of multiple divisional reissue applications, all of the claims of the patent to be reissued must be presented in both the parent reissue application and the continuation reissue application in some form, i.e., as amended, as unamended, or as canceled. The same claim of the patent cannot, however, be presented for examination in both the parent reissue application and the continuation reissue application, as a pending claim, in either its original or amended versions. See the discussion in subsection I above for treatment of this situation. Further, any added claims must be numbered beginning with the next highest number following the original patent claims.

Where the parent reissue application issues before the examination of the continuation reissue application, the claims of the continuation reissue application should be carefully reviewed for double patenting over the claims of the parent reissue application. Where the parent and the continuation reissue applications are examined together, a provisional double patenting rejection should be made in both cases as to any overlapping claims. See MPEP § 804 - § 804.05 as to double patenting rejections. Any terminal disclaimer filed to obviate a nonstatutory double patenting rejection ensures common ownership in accordance with 37 CFR 1.321(c)(3) or common enforcement in accordance with 37 CFR 1.321(d)(3) of the reissue patents during enforcement actions in the remainder of the unexpired term of the original patent.

If the parent reissue application issues without any cross reference to the continuation reissue application, amendment of the parent reissue patent to include a cross-reference to the continuation reissue application must be effected at the time of allowance of the continuation reissue application by certificate of correction. See the discussion above in subsection I under the heading “Divisional Reissue Applications” as to how the certificate of correction is to be provided.

Again, the examiner should make reference in the pending continuation reissue application to the fact that an actual request for a certificate of correction has been generated in the first reissue patent pursuant to 37 CFR 1.177(a), e.g., by an entry in the search notes or in an examiner’s amendment.

A.Consent of the Assignee

Generally, where a continuation reissue application is filed with a copy of the assignee consent from the parent reissue application but with a newly executed reissue oath/declaration, the copy of the assignee consent from the parent reissue application is not acceptable. A copy of the assignee consent is only acceptable if the continuation reissue application corrects an error for which consent was made. Submission of a new oath or declaration is indicative of correction of a different error. Under such circumstances, OPAP will accord the continuation reissue application a filing date, and the examiner should reject the claims under 35 U.S.C. 251 and require a new consent. See MPEP § 1410.02.

B.Reissue Oath/Declaration

Whenever a continuation reissue application is filed with a copy of the oath/declaration from the parent reissue application, the copy of the reissue oath/declaration in the continuation reissue application should be accepted by OPAP because it is an oath/declaration, even though it may be improper under 35 U.S.C. 251 or 37 CFR 1.175. For continuation reissue applications filed on or after September 16, 2012, in the remarks accompanying the continuation reissue application, the applicant should explain why the filing of the copy of the oath/declaration from the parent reissue application is sufficient. The examiner should check the copy of the oath/declaration and any remarks pertaining to the error to ensure that an error is correctly identified by the continuation reissue. See MPEP § 1414 for additional information.

1. Copy of Reissue Oath/Declaration from Parent Reissue Application

See subsection I.B.1 above for information on when a copy of the reissue oath/declaration is acceptable in both AIA and pre-AIA continuation reissue applications.

2. Error Statement

See subsection I.B.2 above for information on when an error statement is acceptable in both AIA and pre-AIA continuation reissue applications.

The following are examples where the oath/declaration from the parent application covers the error being corrected by the continuation reissue application:

The parent reissue application’s supplemental declaration or remarks (if the parent reissue application was filed on or after September 16, 2012) describes the addition of Q and D to the dependent claims, which have been rewritten as independent claims. A copy of the original reissue declaration from the parent reissue application, which describes the addition of D to the original independent patent claim, was filed in the continuation reissue application. In the remarks accompanying the continuation reissue application, the applicant explains why the filing of the copy of the oath/declaration from the parent reissue application is sufficient. Thus, the copy of the oath/declaration describes an error being corrected in the continuation reissue application (and the declarations of the parent reissue application and the continuation reissue application correct different errors, which is a requirement if the continuation reissue application was filed prior to September 16, 2012). Further, the copy of the original consent from the parent reissue application filed in the continuation reissue application covers the error described in the copy of the declaration filed in the continuation reissue application.

A nonstatutory double patenting rejection should be considered by the examiner, with the requirement of a terminal disclaimer in each pending application. In re Berg, 140 F.3d 1428, 1435, 46 USPQ2d 1226, 1232 (Fed. Cir. 1998) (“The two-way exception can only apply when the applicant could not avoid separate filings, and even then, only if the PTO controlled the rates of prosecution to cause the later filed species claims to issue before the claims for a genus in an earlier application…In Berg’s case, the two applications could have been filed as one, so it is irrelevant to our disposition who actually controlled the respective rates of prosecution.”).

The parent reissue application’s supplemental declaration or remarks (if the parent reissue application was filed on or after September 16, 2012) describes the addition of D to the ABCE and ABCF combinations, correcting an error in the original dependent claims. The copy of the original reissue declaration from the parent reissue application filed in the continuation reissue application describes the addition of D to the broad claim, correcting an error in the original independent claim. A copy of the original reissue declaration is filed in the continuation reissue application and the applicant explains, in the remarks section, why the filing of the copy of the oath/declaration from the parent reissue application is sufficient. The filing of the continuation reissue application is permitted because the applicant is free to split the correction of an error as to different claims into different reissue applications, where one is a continuing application of another. See In re Graff, 111 F.3d at 877, 42 USPQ2d at 1473, where the Federal Circuit stated that 35 U.S.C. 251 places “no greater burden on Mr. Graff’s continuation reissue application than upon a continuation of an original application…”

Again, a nonstatutory double patenting rejection should be considered by the examiner, with the requirement of a terminal disclaimer in each pending application. See In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233.

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